Complainant is The Middleby Corporation, United States of America (“United States”), represented by Demys Limited, United Kingdom.
Respondent is Registration Private Domains by Proxy, LLC, United States / Mariel Konowitz, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 15, 2021. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2021. The Center appointed Scott R. Austin as the sole panelist in this matter on July 30, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On August 13, 2021, due to exceptional circumstances, the Panel instructed the Center to notify the parties that the decision due date is extended to August 17, 2021. 4. Factual Background The following facts appear from the Complaint and its Annexes, which have not been contested by Respondent. Complainant is one of the world’s largest global manufacturers of commercial cooking equipment. Founded in 1888 in Chicago, United States as Middleby Marshall Oven Company, Complainant changed its name in 1985 to The Middleby Corporation. Complainant manufactures commercial restaurant equipment, residential appliances, and systems for industrial processing, packaging, and baking under its trademarks MIDDLEBY (the “MIDDLEBY Mark”), and MIDDLEBY MARSHALL (the “MIDDLEBY MARSHALL Mark”), the name of its operating subsidiary, Middleby Marshall, Inc. Complainant’s commercial cooking equipment products are used in fast food service and fine dining restaurants alike, as well as in institutional food service such as hospitals and schools. Today Complainant employs over 10,000 employees in more than 150 countries. In 2020 Complainant achieved net sales of USD 2,513.3 million, with over USD 882 million gross profit. Complainant uses the domain name Complainant, either directly or through its operating subsidiary, Middleby Marshall Inc., is proprietor of a large, global portfolio of registered marks relating to the term MIDDLEBY and its subsidiaries and affiliates comprising the “MIDDLEBY Group” own or hold numerous trademark applications and registrations containing the MIDDLEBY, MIDDLEBY MARSHALL, and MIDDLEBY-MARSHALL Marks covering a range of commercial cooking equipment related products in jurisdictions around the world, such as United States Trade Mark Registration No. 1109952 for MIDDLEBY-MARSHALL registered on December 26, 1978, for “ovens for baking food” in international class 11, claiming a first use date of January 1, 1890; Brazil Trade Mark Registration No. 909269394 for MIDDLEBY, registered on March 13, 2018; and, United Kingdom Trade Mark Registration No. UK00001339056 for MIDDLEBY MARSHALL, registered on October 13, 1989. The disputed domain name was created on May 3, 2021, and at the time of the filing of the initial Complaint resolved to an inactive website that had been disabled and showed an error message. Complainant asserts that the disputed domain name is configured with both a Mail eXchanger (“MX”) record, so it can receive email, and a Sender Policy Framework (“SPF”) record, which decreases the likelihood that emails sent from the specified server on the disputed domain name’s behalf would be marked as spam by the recipient. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a Response. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. Where no Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; The Panel will address each of these requirements in turn. The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of registration documents for the trademarks MIDDLEBY, MIDDLEBY MARSHALL, and MIDDLEBY-MARSHALL registered variously between December 28, 1978, and March 13, 2018. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Prior UDRP panels have also recognized Complainant’s trademark rights in the MIDDLEBY Marks to support enforcement of its rights under the UDRP. See, e.g., The Middleby Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Leila Yang,WIPO Case No. D2020-2307 ( With Complainant’s rights in the MIDDLEBY Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s MIDDLEBY Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, sections 1.11.1 and 1.7. (Top-Level Domain as technical requirement for domain name registration is disregarded under the confusing similarity test). Prior UDRP panels have held where a disputed domain name incorporates a complainant’s mark in its entirety, appending a descriptive term with a hyphen and a generic Top-Level Domain to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB,WIPO Case No. D2018-1138 (panel finds that addition of the word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and disputed domain name Complainant contends and provides persuasive evidence in the record submitted that the disputed domain name incorporates Complainant’s mark MIDDLEBY in its entirety, attaching with a hyphen the term “corp”, an abbreviation for the business descriptor “corporation”. Complainant shows this abbreviation is commonly used by Complainant and third parties when referring to Complainant. As such, the Panel finds that the descriptive term “corp” is closely associated with Complainant or its activities, the relevance of which is further discussed under the other elements. This Panel agrees with prior UDRP panel decisions cited by Complainant which found disputed domain names containing Complainant’s distinctive MIDDLEBY Mark in its entirety and adding the common abbreviation “corp” for corporation, identifying Complainant’s business as a corporation, to be confusingly similar to Complainant’s registered MIDDLEBY Mark. See The Middleby Corporation v. Jordan Brand, Ballmail, supra. In The Middleby Corporation v. Jordan Brand,theUDRP panel found the at-issue domain name Complainant’s MIDDLEBY Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the MIDDLEBY Mark in which Complainant has rights. Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c). Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent has no affiliation or connection with Complainant. Complainant expressly states that it did not consent, license or authorize Respondent to use the MIDDLEBY Mark in any manner, including the registration of a domain name (much less the registration of a domain name to access a website structured to possibly engage in an illegitimate phishing scheme against Complainant’s customers). Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272. Complainant also shows that Respondent is not commonly known by the disputed domain name because the original Respondent listed in the WhoIs record submitted with the initial Complaint is “Registration Private Domains by Proxy, LLC”. The Registrar disclosed the underlying registrant, “Mariel Konowitz”, whom has been added to the amended Complaint as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. These facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel,WIPO Case No. D2004-0246 (“given the Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”). A respondent not commonly known by the disputed domain name evinces a lack of rights or legitimate interests. See World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642. Since there is no evidence here, including the WhoIs record for the disputed domain name, suggesting that Respondent is commonly known by the disputed domain name, Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo,WIPO Case No.. D2004-1049. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Complainant also contends that since the disputed domain name resolves to an inactive or “blank” web page, which reports an error (“This page isn’t Working”) or suggests a typing error (“Check if there is a typo in middleby-corp.com.”), that Respondent has no genuine actual or legitimate business which uses the name or mark “middleby”, or any similar name and has not used the “middleby” name or mark (or any similar name) in connection with the bona fide offering of goods or services so that it benefits from any goodwill as such term is reflected in the disputed domain name. Prior UDRP panels have held that use of a disputed domain name to resolve to a blank or inactive web page does not represent a bona fide use of the disputed domain name. See Microsoft Corporation v. Charilaos Chrisochoou,WIPO Case No. D2004-0186, see also Fetzer Vineyards v. --,WIPO Case No. D2019-2285; WIPO Overview 3.0, section 2.9. Complainant also contends and has provided detailed evidence showing the potential for Respondent’s use of the disputed domain name in connection with fraudulent email activity to impersonate Complainant as part of a phishing scheme. Complainant shows in the annexes attached to its Complaint, the disputed domain name’s zone file is configured with MX and SPF records, which means that the disputed domain name can be used for email communication. Complainant further argues that because the disputed domain name effectively impersonates Complainant or at least carries a high risk of implied affiliation, any email originating from the disputed domain name could be highly confusing or misleading to Complainant’s employees, subsidiaries, business partners, agencies, and clients. Complainant has also provided evidence of being targeted for such attacks previously and shows reasonable grounds to infer that similar abuse appears likely here. See, The Middleby Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Leila Yang,WIPO Case No. D2020-2307, supra. (Complainant targeted by email-based phishing attacks under disputed domain name Prior UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. See, WIPO Overview 3.0, section 2.13. See also, Springer Nature Limited v. Registration Private, Domains By Proxy, LLC / Collections Springer Nature,WIPO Case No. D2020-0955. Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel has found in Section 6.A. above that the disputed domain name is confusingly similar to Complainant’s MIDDLEBY Mark and that the added abbreviation “corp” is so closely associated with the Complainant or its activities as such to carry a high risk of implied affiliation. In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s MIDDLEBY Mark and the domain used to access its official Website “www.middleby.com”, as discussed in section 6.A. above, it is implausible to believe that Respondent was not aware of Complainant’s MIDDLEBY Mark when it registered its confusingly similar domain name. This is especially true where Complainant’s mark has been used for over a century and Complainant is globally recognized as a world leader in commercial restaurant baking oven equipment. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term such as the simple business descriptor “corp”) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.; see also, Allianz SE v. Well Domains are either owned by us or Client Managed,WIPO Case No. D2008-0535. The Panel also notes here additional factors asserted by Complainant under WIPO Overview 3.0, section 3.3, and its cases from which an inference of bad faith may be supported based on Respondent’s passive holding and non-use of the disputed domain name: (i) Complainant’s MIDDLEBY Mark is highly distinctive, recognized as a global leader in its industry and in use for over a century before the disputed domain name was registered; (ii) Respondent has provided no response to the Complaint or to prior correspondence from Complainant in an attempt to address the matter before filing a UDRP Complaint, which is contrary to the actions of a domain name registrant with a legitimate purpose or use for the disputed domain name; (iii) Respondent continued to conceal its identity and has redacted, or allowed to have redacted, its contact details on the public WhoIs (it is reasonable to contend that a bona fide registrant would publish contact details by which it could be contacted; that it has not done so tends towards registration and use in bad faith); (iv) Respondent’s registration of the disputed domain name using the MX and SPX configurations with a confusingly similar domain name to imply an association or affiliation with Complainant, to which Complainant contends it is inconceivable that Respondent could have registered the disputed domain name without Complainant’s marks in mind and with bona fide intentions, but instead intending to engage in per se illegitimate activity for commercial gain through phishing or spam attacks on Complainant and its customers. Given the circumstances of this case, such a showing is sufficient to establish bad faith registration and use. See, WIPO Overview 3.0, section 3.3. See also BOLLORE SE v. Contact Privacy Inc. Customer 1247853759 / Angela Chaney,WIPO Case No. D2020-2050 (disputed domain name set up with MX record may be making use of Complainant’s renowned trademark for unlawful purposes; passive holding of disputed domain name evidence of bad faith). For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Scott R. Austin
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: August 8, 2021
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